Australia: Reform is on the way – European trade mark owners need to watch this space

What you need to know

• A number of significant changes are afoot which will overhaul several aspects of the European trade mark system in the coming months.
• An important change is that the scope of protection afforded to some trade marks filed before 22 June 2012 may be affected in a way that trade mark owners may not anticipate.
• Owners of European trade marks should keep a close eye on developments, as they may need to act quickly to ensure they retain the relevant scope of protection under their existing registrations.

Significant changes are afoot in Europe and owners of European trade marks (also known as 'Community Trade Marks') filed before 22 June 2012 would be well advised to keep track of developments which have the potential to limit the scope of their protection in the EU.

Background

As most trade mark owners understand, a trade mark provides a monopoly in relation to a particular sign for specific goods or services. In the vast majority of jurisdictions, goods and services are classified under the Nice Classification into 45 different classes. Each class of goods or services has what is known as a 'class heading' which provides a general indication of the types of goods and services within its ambit. While past European practice allowed trade mark owners to obtain a broad scope of protection by using a class heading, that practice is to become a practice of the past.

What's happening in the EU?

The Office of Harmonisation in the Internal Market, which will soon be re-branded the European Union Intellectual Property Office (EUIPO), has indicated that as a result of changes enacted under Article 28 of the new EU trade mark regulation (EUTMR), the monopoly afforded to EU trade marks filed before 22 June 2012 that contain class headings will be restricted to the literal meaning of the words included in the class heading. This means that if goods or services are not clearly included in the relevant class heading, protection will not extend to these goods or services.

This practice has already been applied for EU trade marks filed after 22 June 2012, following the 'IP Translator' case that was heard at that time. Now, effective from 23 March 2016, the EUTMR will extend this practice to trade marks filed before 22 June 2012.

There has been some confusion about exactly how this change will be implemented in practice and what goods or services will or won't be taken to fall within the literal meaning of a given class heading. In light of this, we understand that the EUIPO will issue a communication from the EUIPO President sometime this month.

The EUIPO will afford EU trade mark owners a six-month window between 23 March 2016 and 23 September 2016 to clarify the scope of protection claimed by their pre- 22 June 2012 EU trade marks. This will be done by filing an 'Article 28 declaration' indicating the goods and services that are intended to be protected, but are not covered by the literal meaning of class headings used in a registration. If no action is taken, it seems that EU trade mark registrations which use class headings will have their protection limited to the literal meaning of the goods or services specifications, and not the broader monopoly in respect of which trade mark owners thought they had obtained protection by including a class heading.

What's next?

EU trade mark owners should keep an eye out for the communication that is soon to be issued by the EUIPO, and take the time now to evaluate their existing pre-22 June 2012 registrations.

Although the process and requirements of the Article 28 declaration have yet to be finalised, given that there will be only a limited six-month window to amend the scope of EU trade mark registrations to include goods or services not covered by the literal meaning of class headings, owners of EU trade marks filed before 22 June 2012 would be well advised to watch this space and be ready to engage with their advisers to discuss the various options available.

This article is intended to provide commentary and general information. It should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this article. Authors listed may not be admitted in all states and territories